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Setting up a 2(d) Citation Watch

All TM TKO subscriptions include unlimited watching, and that includes our brand-new 2(d) citation watching tools. Read below to learn why and how to set up 2(d) citation watches. (This post was updated on July 13, 2018 to reflect improvements to the watch setup interface.)

Why use 2(d) Citation Watching?

First, you can do the best possible job protecting your clients. You’ll get a notice when a USPTO Examiner cites one of your client’s applications or registrations against a third party application. This is a key action point, where your client can send a demand letter to “pile on” to the USPTO’s refusal, and often push the applicant for a confusingly similar mark to either drop the application or drop the mark entirely.

Second, you can develop more business from the best customers in the world – your existing clients. Where a client may be cautious about investing attorney time or money to watch for confusingly similar marks in a speculative manner, clients tend to be much more willing to take action on a concrete issue that the USPTO has already identified as likely to cause confusion.

How do you set up 2(d) Citation Watching?

It’s simple! Go to “Watch,” then “New Watch” then “Office Action.” Give your watch a name, and pick a frequency – weekly is probably best to ensure that you can act before the applicant files a response.

The screenshot below shows how you would set up a watch. Under “Office Action Criteria,” pick a “Direction” and select “Outgoing” (to see Office Actions only and not responses), then “Add rule” and add an “Issue Type” with “Section 2(d)” to see citations only.

Then, under “Cited Trademark Criteria,” use “Correspondent Email” or “Attorney of Record” to identify just your clients, or “Correspondent Firm” to see your full firm. If you use “Attorney of Record” and don’t have an extremely uncommon last name, you probably want to select “all” in the drop-down to make sure you only identify your own portfolio.

Finally, if you want to generate a CSV file of the items in the report, just click the option and you’ll get it via email. You can use this data to, for example, automatically generate reporting smart, issue-driven reporting emails to clients.

Get watching! As always, if you have any questions or need setup help, please email us at support@tmtko.com and we would be happy to help.